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Love v. Regency
Case Summary

Dr. Stanley Love is a Central City dermatologist who, for more than a decade, has performed cosmetic surgery along with his general dermatology practice.  Over the last 13 years, he has marketed his cosmetic surgery practice with “The Love Look” as his slogan.  Dr. Love markets primarily via video ads shown on cable TV in which he is featured.  Dr. Love did not register the slogan with any state agency or with the U. S. Patent and Trademark Office.

Thirteen years ago, two New York City plastic surgeons formed Regency Plastic Surgery, P.C.  A year later, Regency registered the service mark “The Look of Love” with the U. S. Patent and Trademark Office and began using the slogan in all its marketing.  Over the years, Regency expanded its marketing area when it purchased plastic surgery practices in communities beyond New York City.

Six years ago, Regency purchased a plastic surgery practice in Oakdale, a well-to-do bedroom community of Central City, and began using “The Look of Love” in its marketing campaign in the Central City area.  Regency markets primarily via glossy print ads in upscale magazines aimed at people with significant disposable income.

Two years ago, Dr. Love filed suit against Regency alleging infringement of his common law trademark of “The Love Look” and seeking injunctive relief and damages.  Regency denies liability, claiming that Dr. Love had no common law trademark because “The Love Look” is merely descriptive and, therefore, Dr. Love could acquire no common law trademark rights in the slogan.  Regency also claims that, even if “The Love Look” has acquired trademark protection, Regency did not infringe the trademark.

Plaintiff has two fact witnesses: Dr. Love himself, who wrote a letter to Regency asking it to cease and desist running its ads after finding out his patients had been confused by Regency’s ads; and a patient who mistakenly went to Regency after seeing a Regency ad and thinking, based on its slogan, that she could see Dr. Love that way.  Plaintiff also has two expert witnesses.   Dr. Pat Brantly is a physician, and more recently a marketing consultant, who reports actual patient confusion caused by the two ad campaigns and slogans.  In Brantly’s opinion, there is a high likelihood of confusion between the two ad campaigns, which he finds supported by a survey conducted at his request.  He also finds Regency’s conduct willful.  Dr. Love’s long-time accountant, Sami Forrester, is plaintiff’s damages expert.

Regency has two fact witnesses: Dr. Diana Segan, a plastic surgeon who helped form the company and ran it at the time it expanded to Oakdale; and Jeffrey Anderson, a satisfied Regency patient who wasn’t confused at all after having seen both ad campaigns.Regency has two expert witnesses.  Jean Woodward is a professor of marketing with a PhD in Psychology.  She conducted a survey and focus group on the issue of possible confusion, concluding that Dr. Love’s ad was merely descriptive and that the likelihood of confusion between the two ad campaigns was “extremely low (verging on nonexistent).”  Aaron Weinberg, CPA and JD, is defendant’s damages expert.  His opinion is that the decline in revenue from Dr. Love’s cosmetic surgery practice is the result of his so-called vanity TV commercials becoming stale and not any alleged confusion in the ad campaigns.

Summary of Applicable Law

The State Supreme Court has repeatedly held that usage in this state provides a common law trademark in an unregistered name or slogan so long as the name or slogan is “fanciful” as opposed to merely descriptive.  Thus, the Supreme Court has upheld “Purple Passion” as a common law trademarked name for grape soda pop, while denying common law trademark protection to “Good Old Grape Pop.”
The State Supreme Court has held that once one acquires a common law trademark in a name or slogan in this state, that right cannot by defeated by another person’s later registration of the name or slogan with the U. S. Patent and Trademark Office.  Such registration may provide the owner with rights in other states, but it does not affect a prior common law trademark in this state.  On the other hand, once someone registers a name or slogan with the USPTO, no one else can thereafter acquire new common law trademark protection in any state.
State law provides the test for infringement is whether the defendant’s use of a name or slogan is likely (probable) to cause confusion in the public’s mind between the plaintiff’s goods/services and the defendant’s.  The Supreme Court has held that the following factors should be considered in determining the likelihood of confusion:   

  1. Strength (distinctiveness) of the plaintiff's name or slogan;
  2. Relatedness of the goods or services provided by the parties;
  3. Similarity of the names or slogans;
  4. Evidence of actual confusion;
  5. Similarity of marketing channels used;
  6. Likely degree of purchaser care in selecting the goods/services in question;
  7. Defendant's intent in selecting the name or slogan (e.g. whether defendant intended to capitalize on the plaintiff’s mark);
  8. Likelihood of either party’s expansion of product/service lines to more closely resemble the other party’s.

A plaintiff can obtain past and future damages for infringement.  The measure of damages is the loss to the plaintiff, or profit to the defendant, whichever is greater. 
A plaintiff can obtain treble damages and attorneys’ fees where the trier of fact finds willful infringement.  “Willful” is defined as infringement by a defendant who has actual knowledge that his or her actions are infringing on the plaintiff’s common law trademark.

© NITA, used with permission 

 

 

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